The undersigned respectfully opposes the 10/5/98 proposed
amendment to 35 CFR 1.98 that would require, subject to certain
limited exceptions, each citation submitted in an information
disclosure statement to be uniquely described relative to the
claimed invention(s).

The undersigned opposes the proposed change not because it
will shift work from Examiners to applicants, but because it
will likely have a fundamental detrimental effect on
substantive patent rights.

Recent cases of the Court of Appeals for the Federal Circuit
show an increasing trend to narrow patents through claim
interpretation and/or the Doctrine of Equivalents, based on
statements made during PTO prosecution in the absence of claim
amendments. See, e.g., Texas Instruments, Inc. v. International
Trade Comm’n, 988 F.2d 1165 (Fed. Cir. 1993); Cole v.
Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996).
Furthermore, the Court held earlier this year that the
recapture doctrine can foreclose a broadening reissue based on
attorney argument alone without any substantive claim
amendment. Hester Industries, Inc. v. Stein Inc., 142 F.3d 1472
(Fed. Cir. 1998).

If the PTO’s proposed rule change is enacted, each and
every "unique description" an applicant submits to obtain
consideration of a prior art citation may be available as a
separate "file wrapper estoppel" and/or to trigger the
recapture doctrine preventing broadening reissue. Furthermore,
since the PTO would require the applicant to compare the
citation with the claimed subject matter in formulating such
"unique descriptions", these IDS statements may be available
and used to interpret the claims.

Thus, while the PTO’s stated purpose is to shift from
the Examiner to the applicant, the burden of separating wheat
from chaff, the result of the proposed change will likely be to
create an extensive prosecution history that could
fundamentally affect the scope of US patent rights and the
ability to seek broadening reissue.

The PTO states that one of its goals is to give applicants
an incentive to reduce the number of IDS citations. However, as
the PTO correctly points out in its Advance Notice, the risk of
"inequitable conduct" accusations essentially forces many
applicants to submit large numbers of citations in certain
cases or run the risk of being accused of committing a fraud on
the Patent Office. Thus, it is unlikely that the PTO’s
stated goal of reducing the number of IDS citations can be
achieved in the current legal climate.

Rather, in such cases, the PTO’s proposed rule change
would present the applicant with a Hobson’s Choice of
either uniquely describing a given citation (and thereby run
the risk of being accused of mischaracterizing it) or deciding
not to submit it (and run the risk that he/she may be accused
of violating the duty of candor by withholding it).

The PTO has previously dealt with this issues before and
reached an opposite conclusion. Although not acknowledged in
the Advance Notice, the PTO’s proposed change appears to
be a direct reversal of its amendment of Rule 98 on 1/17/92 to
delete the former requirement of providing "a concise statement
of relevance" with respect to each item cited in an IDS. See 57
Fed. Reg. 2021. Deletion of the former requirement from Rule 98
was appropriate and in harmony with the concurrent amendment to
Rule 56. No substantive legal reason justifies the PTO
reversing itself now and imposing a requirement that is in many
respects more stringent than the former "concise statement of
relevance" requirement.

There may be ways to assist the Examiner in reviewing
voluminous citation submissions that do not require applicants
to provide substantive "unique descriptions" on the record. For
example, one possibility is to encourage Examiners to telephone
the applicant and request a interview for the purpose of
discussing the relevance of the citations or asking questions
about them. Another possibility is to impose additional
requirements on the form of the submission such that the
Examiner can review it as efficiently as he/she searches
voluminous PTO subclasses Examiners routinely use for their
patentability searches. If electronic searching capabilities
would make the process more convenient and less time intensive,
perhaps applicants could be requested to provide electronic
versions of at least US patent citations.

The undersigned, who is filing this submission on his own
behalf and speaks for no one in this regard other than himself,
respectfully urges the PTO not to enact the proposed "unique
description" requirement for IDS citations.